Tuesday, 21 December 2021

J 8/20 & J 9/20 - Inventor has to be a person with legal capacity

In the oral proceedings before the Legal Board of Appeal in the two DABUS cases earlier today, the Board decided that the appeal is dismissed and that the request for a referral to the Enlarged Board is refused.

The Board concludes that DABUS, an AI machine, cannot be considered an inventor in the meaning of the EPC, as the Board concluded that an inventor has to be a person with legal capacity.

During the oral proceedings, the appellant gave various arguments as to why a non-person inventor should be possible, including references to national law/rulings of EPC as well as non-EPC states. The appellant also argued that the EPO should not have checked the designation of the inventor (Art.60(3) and Rule 19(1) EPC), also not whether the inventor is a natural person or not, and that an incorrect opposition is also not a ground of revocation in proceedings before the EPO - it being decided under national law and being in the sole competence of the national courts.

The appellant also indicated that, in his opinion, one  reason for the designation of inventor is transparency, and that the designation of DABUS was transparent, correct and in his view according to the relevant principles of law. While the applicant could have prevented the issue by adding himself or another person as an inventor, it would not be have been correct and thus appropriate to incorrectly designate a fictitious person or a person that was not an inventor as the inventor, even though that would not have led to a refusal in view of Art.60(3) EPC. 

The debate address the relevance of Art.60(1) EPC (The right to a European patent shall belong to the inventor or his successor in title), Art.60(3) EPC (In proceedings before the European Patent Office, the applicant shall be deemed to be entitled to exercise the right to a European patent) and Rule 19(2) (The European Patent Office shall not verify the accuracy of the designation of the inventor) as well as Art. 81 first and second sentence (statement to the origin of the right to the European patent) and Rule 19(1) (The request for grant of a European patent shall contain the designation of the inventor. However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate document. The designation shall state the family name, given names and country and place of residence of the inventor, contain the statement referred to in Article 81 and bear the signature of the applicant or his representative.) The appellant also submitted that "successor in title" does not need to arise from a transfer, but may also derive from the ownership of DABUS (note: in the case as hand, the applicant did not just own DABUS, but also wrote its source code and operated it, so there was no other person that could be considered to be possibly entitled to the ownership): with DABUS being able to make inventions, its inventions would also be owned by its owner - fructus industriales, "the owner of a tree also owns the fruits of that tree".  

During the oral proceedings, the appellant also indicated was that there was a dilemma: the invention was not a natural person, while EP patents should be grantable for any inventions, also for AI-originated inventions. The appellant asked the Board, in case the would not grant any of the requests, whether the Board would know a solution to the dilemma. After the oral proceedings were closed, the chairman of the Board indicated that the Board did not find a solution for the situation the appellant is in. 

The full reasoning will be provided in the written decision.

File wrapper:  EP 18 275 163 (J 8/20) and EP 18 275 174 (J 9/20)
Also refer to our earlier blog post in respect of the refusal by the Receiving Section here.
The above comments reflect my personal understanding of what was discussed at the oral proceedings.

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Update 22.12.2021: 

The EPO published a Press Release "AI cannot be named as inventor on patent applications" dated 21 December 2021, indicating that:

In public oral proceedings today, in combined cases J 8/20 and J 9/20, the Legal Board of Appeal of the EPO confirmed that under the European Patent Convention (EPC) an inventor designated in a patent application must be a human being. The board dismissed the applicant's appeal. The written decision and reasons will be issued in due course and will be available via the European Patent Register. The Boards of Appeal have issued a communiqué with further details.

The Boards of Appeal published a communiqué, which is cited in full below (emphasis added):

Press Communiqué on decisions J 8/20 and J 9/20 of the Legal Board of Appeal

21 December 2021

Today, the Legal Board of Appeal announced its decision to dismiss the appeal in cases J 8/20 and J 9/20. The Legal Board of Appeal confirmed the decisions of the Receiving Section of the European Patent Office to refuse the applications EP 18 275 163 and EP 18 275 174, in which an artificial intelligence system called DABUS was designated as inventor in the application forms. The Legal Board of Appeal also refused the auxiliary request according to which no person had been identified as inventor but merely a natural person was indicated to have "the right to the European Patent by virtue of being the owner and creator of" the artificial intelligence system DABUS.

Background

Under Article 81 EPC the applicant must designate the inventor. According to Article 60(1) EPC the right to a European patent belongs to the inventor or his successor in title.

In cases J 8/20 and J 9/20 the question arose as to whether the applicant, when applying for a European patent, can designate as inventor an artificial intelligence machine which does not have legal capacity. Applications designating the AI system DABUS as inventor were filed in multiple jurisdictions, including at the European Patent Office. The applicant argued that the inventions had been created autonomously by DABUS.

According to the European Patent Convention (EPC) the designation of the inventor is a formal requirement which a patent application must fulfil according to Article 81 EPC and Rule 19(1) EPC. Assessment of this formal requirement takes place prior to and independently from the substantive examination and involves no consideration as to whether the subject-matter of that application meets the requirements of patentability.

The Receiving Section of the EPO refused both applications. In its decisions it considered the designation submitted by the applicant not to be consistent with Article 81 EPC for two reasons. Firstly, it concluded that only a human inventor could be an inventor within the meaning of the EPC. For this reason, designating a machine as inventor did not comply with the requirements set out in Article 81 and Rule 19(1) EPC. Secondly, the Receiving Section was of the opinion that a machine could not transfer any rights to the applicant. The Receiving Section considered therefore that the statement that the applicant was successor in title because they owned the machine did not satisfy the requirements of Article 81 EPC in conjunction with Article 60(1) EPC.

Key considerations

At the end of the oral proceedings, the Legal Board of Appeal dismissed the appeal and orally provided the following reasoning in both cases:

    • Under the EPC the inventor had to be a person with legal capacity. For this reason at least, the main request was not allowable.
    • Regarding the auxiliary request, a statement indicating the origin of the right to the European patent under Article 81 EPC, second sentence EPC had to be in conformity with Article 60(1) EPC.
    • The EPO was competent to assess whether such statement referred to a situation which was encompassed by Article 60(1) EPC.

The written decision with a detailed reasoning will be sent to the parties in due course and will subsequently be publicly available in the decisions database of the Boards of Appeal.

Contact

Nikolaus Obrovski

Jeannine Hoppe

Spokespersons of the Boards of Appeal of the European Patent Office

This press release is a non-binding document for media use.

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